OPPOSITION No B 2 585 043

Adventure Forest Group Limited, Unit 1, Fornham Business Court The Drift, Fornham St Martin, Bury St Edmunds, Suffolk IP31 1SL, United Kingdom (opponent), represented by Taylor Vinters, Merlin Place, Milton Road, Cambridge CB4 0DP, United Kingdom (professional representative)

a g a i n s t

4J Leisure Ltd, 7 Herbert Terrace, Penarth CF64 2AH, United Kingdom (applicant), represented by Geldards LLP, Dumfries House, Dumfries Place, Cardiff, Wales CF10 3ZF, United Kingdom (professional representative).

On 05/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 585 043 is upheld for all the contested services.

2. European Union trade mark application No 14 334 312 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 334 312. The opposition is based on the UK trade mark registration No 2 537 002, international trade mark registration No 1 065 236 designating the European Union and the British well-known mark GO APE. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 065 236 designating the European Union.

1. The services

The services on which the opposition is based are the following:

Class 41: Leisure services; entertainment services; provision of high-wire rope-bridge course facilities; provision of swing and zip wire course facilities; provision of rope-bridges, swings and zip wires for entertainment and education; theme park services; adventure park facilities and services; training services; team building training services; sporting services; sports camp services; provision of sporting and cultural facilities; provision of climbing instruction and facilities; provision of gymnastic and acrobatic instruction and facilities; organising of sports competitions; rental of sports equipment and facilities; advisory, instructional and consultancy services relating to all of the aforesaid services.

The contested services are the following:

Class 41: Leisure services; entertainment services; provision of trampoline parks; provision and organisation of trampolining activities; provision and organisation of indoor leisure activities.

Leisure services; entertainment services are identically contained in both lists of services.

The contested provision of trampoline parks; provision and organisation of trampolining activities; provision and organisation of indoor leisure activities are included in the broad category of the opponent’s entertainment services. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

GO APE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slavic language areas namely, Polish-, Slovakian-, Slovenian-, Czech-, Croatian- and Bulgarian-speaking parts of the relevant public.

The earlier mark is a word mark.

The contested sign is a figurative mark, consisting of a black rectangle in which a yellow rectangle with curved corners is inserted. Inside this yellow rectangle, the verbal elements “go air trampoline park” are depicted. The first and the last two verbal elements are in white colour and the second one in yellow on a black background. Below the letter “r” of the word “air”, an arrow is pointing downwards.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The English word 'TRAMPOLINE' of the contested mark will be understood as a tough canvas sheet suspended by springs or elasticated cords from a frame, used by acrobats, gymnasts, etc. by the major part of the relevant public. This is because the word is very close to equivalent word in the official language of the relevant territories (for example 'trampolína' in Czech and Slovak, 'trampolina' in Polish, 'trampolin' in Croatian and Slovene). The word 'PARK' of the contested mark will be understood as 'a piece of open land in a town with public amenities' throughout these territories.

Therefore, the verbal elements ‘trampoline park’ of the contested sign will be associated with ‘a place where one can use trampolines’. Bearing in mind that the relevant services are leisure-related, this element is non-distinctive for these services, namely for Leisure services; entertainment services; provision of trampoline parks; provision and organisation of trampolining activities; provision and organisation of indoor leisure activities.

The word ‘GO’ contained in both signs is a basic English word, meaning among others ‘to move or proceed, especially to or from a point or in a certain direction’ and is likely to be understood by at least a part of the relevant public, more specifically by members of the relevant public who have a minimal knowledge of English, as the term ‘GO’ can be considered a basic English word which is commonly used (see 11/09/2014, R 1885/2013-2, § 30), while the Courts have decided on various occasions that the average consumer in the European Union as a whole can be deemed to understand basic English words (21.01.2010, T-309/08, G Stor,EU:T:2010:22, § 32; 16.01.2008, T-112/06, Idea, EU:T:2008:10, 69; 03.03.2004, T-355/02, Zirh,_EU:T:2004:62, § 46). However, for the remaining part of the public the word ‘GO’ has no meaning. The comparison of the signs at issue will focus on the public that does not understand the word ‘GO’ given that this public is more prone to confusion.

As regards the contested sign, it is composed of distinctive and non-distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the figurative elements do not play a distinctive role in the sign.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The verbal elements ‘GO AIR’ in the contested sign are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in the string of letters ‘GO A*’. However, they differ in the second verbal element in both signs except for the first letter (Ape versus Air) and in the non-distinctive verbal element ‘trampoline park’. They further differentiate in the stylisation of the contested sign and the figurative elements which are considered to be banal.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛GO-A*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛*PE’ of the earlier sign and ‘*IR’ and ‘Trampoline Park’ of the contested mark, which have no counterparts in the earlier sign. As the verbal elements ‘Trampoline Park’ are considered to be non-distinctive and not dominant, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘GO’ included in both signs, will be associated with ‘to move’ by part of the public who understands basic English. To that regard the signs are conceptually similar for that part of the public. The verbal element ‘Air’ of the contested sign is likely to be understood in Slavic languages as well as this originally Greek word is included in many Slavic words (for example airport which is Aerodrom in Croatian or Slovenian). For other parts of the relevant public, that element has no meaning. The signs are insofar conceptually not similar as far as the non-distinctive and not dominant element ‘Trampoline Park’ is concerned.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in the United Kingdom in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Information that 29 adventure parks were launched in the UK since 2002 using the opponent’s mark.

• Exhibit 6: use of the opponent’s mark in its own adventure parks.

• Exhibit 7: The opponent claims that over 5 million visitors have visited the parks in the years 2002-2015.

• Press Coverage: a wide selection of articles in the British press mentioning the adventure parks, among which are British newspapers like The Sun and The Daily Telegraph. Some of these articles are articles with recommendations for adventure trips around the country, others seem more like sponsored press coverage like the one from The Sunday Times (half price offer).

• Awards given to the opponent which include the mentioning in the Sunday Times as being one of the successful companies in the UK in 2008 and 2010, presented as the Sunday times Virgin Fast Track 100; as well as the Santander Small to Medium Sized Business of the Year award in 2009.

• Google Analytics statistics for the websites www.goape.co.uk and www.air-space.co.uk.

• Extracts from Tripadvisor website (www.tripadvisor.co.uk) containing reviews from clients in relation to Go Ape adventure parks.

• Extracts from the opponent’s Youtube channel.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see to that effect, judgment of 22/06/1999, C 342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 22).

In the present case, except for the press articles and the statistics emerging from Google Analytics, the evidence consists primarily of documentation emanating from the opponent and there is insufficient information from independent third parties that could serve to corroborate the opposing party’s statements and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public.

Some of the materials consist of a selection of press articles. Further, there is mentioning in press cuttings for some awards received by the opponent to be one of the more successful start-up companies. In this regard it must be recalled that the relevance of a certification or award largely depends on its contents and usually it is not sufficient on its own to lead to a conclusion of reputation. Furthermore, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given little weight.

The award given by The Sunday Times suggests that the opponent is one of the more successful private companies in the United Kingdom. This award was given to the opponent named Adventure Forest Group Limited. The mark at stake is ‘Go Ape’, for which no awards were attributed. In any case, these awards do not automatically mean that the sign in question is known by a significant part of the relevant public. There is little or no information about the entities granting the remaining awards and the criteria on the basis of which the prizes were given. It is therefore considered that documents alone cannot give first-hand information about the level of awareness of the earlier trade marks.

Finally, the press articles contain reviews of the opponent’s adventure parks. Whilst it is true that the articles originate from independent sources, which endows them with a sufficient level of objectivity so as to be considered reliable references, there are insufficient indications demonstrating the actual level of awareness on the part of the target consumers that would allow a positive finding of reputation. The fact that the opponent’s adventure parks were featured in the articles is not particularly conclusive per se, since it is very common in the relevant market that these parks are mentioned by the press in order to provide readers with weekend leisure ideas. Furthermore, it cannot be inferred from the evidence submitted that the press coverage of the opponent’s trade marks is so substantial that it can lead to a positive finding of reputation of the earlier marks when corroborated with the rest of the evidence. While there is some information as to the number of actual consumers that were reached by those articles, however it cannot be determined with the required level of certainty what the actual knowledge is that the public has of the earlier trade mark.

There is also no evidence about the nature and scale of the promotional activities undertaken by the opponent to build-up its brand image and enhance trade mark awareness among the public.

Under these circumstances, it is considered that despite showing use of the earlier mark, including the mentioning of the mark in newspapers, the evidence falls short on information that clearly shows the actual degree of recognition of the earlier mark in the relevant market. In other words, the materials submitted do not support, without resorting to probabilities and assumptions, a conclusion that the earlier mark was known by a significant part of the relevant consumers for the services concerned.

Therefore, in the absence of additional independent and objective evidence (for instance, opinion polls and market surveys) that could enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public, the market share held by the mark, the position they occupy in the market in relation to competitors’ services, the duration, extent and geographical area of their use or the extent to which they were promoted, it is concluded that the evidence does not clearly demonstrate the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the services are identical.

The signs are aurally similar to an average degree and visually to a low degree to the extent that they have in common the first word in both signs, namely ‘GO’. They differ in their second word Ape versus Air, except for the first letter ‘A’ as well as in the additional figurative and other additional verbal elements of the contested sign. Regarding the further words ‘Trampoline Park’, placed at the lower end of the contested sign, it must be noted that by virtue of their non-distinctive character and size, they may go unnoticed.

Furthermore, the figurative elements of the contested sign are weak and banal and will have a lesser impact on the consumer’s perception of the mark. The additional verbal elements ‘Trampoline Park’, as explained above, will have a lesser impact on the visual and aural perceptions of the signs due to their rather negligible character, size and positions in the contested sign. Consequently, these additional verbal and figurative elements may not contribute to creating a different overall impression from the consumer’s point of view.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers, perceiving the coinciding element ‘GO’, may easily attribute the same origin to the opponent’s and the applicant’s identical services.

In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This is the case at hand as the services are identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-, Slovakian-, Slovenian-, Czech-, Croatian- and Bulgarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 065 236 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right ‘GO APE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Janja FELC

Lars HELBERT

Plamen IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.